Eduardo Mercadante and Ken Shadlen discuss the potential negative effects of the recent proposals from the Brazilian Patent Office to change the deadlines for the prosecution of patent applications

Mercadante, Eduardo

Shadlen, Kenneth C.

English

LSE Research Online

Brazilian Patent Office and changes topatenting deadlinesEduardo Mercadante and Ken Shadlen discuss the potential negative effects of the recentproposals from the Brazilian Patent Office to change the deadlines for the prosecution of patentapplications.The Brazilian Patent Office (INPI) has been exploring several strategies to reduce theamount of time from when patent applications are filed in Brazil to when final decisions ofwhether or not to grant are made, since, globally, it is historically one of the offices withthe slowest and longest periods of prosecution. To that end, and to its credit, the INPIhas invested in improving the office’s infrastructure and hiring new examiners, both ofwhich are measures that can strengthen examination capacity. Regrettably, however, theINPI has also implemented and proposed policies to expedite prosecution that couldhave harmful consequences for the Brazilian patent system. In September of 2023 theINPI made one such proposal, regarding new deadlines for applicants in theirengagement with the patent office. Our analysis of the INPI’s proposed adjustments,seemingly minor issues but ones that can have significant effects, prompted us topublish a commentary in JOTA,* a journal in Brazil.While the INPI’s proposed changes that we analyse are technical, and deep in theweeds of patent office practices, we alert to four negative consequences. First, theycreate a competitive disadvantage for Brazilian inventors, by depriving them of options inpursuing patents that are available to foreign applicants. Second, they waste resourcesof Brazil’s already overburdened and resource-starved patent office, by requiring them todedicate energies toward examining applications that the inventors themselves oftendecide are not worth pursuing. Third, they compromise the functioning of the safeguardsin the patent system against examination errors, increasing  the risk of granting patentsto application that should be rejected. Finally, they may lead to disincentives toinnovative investments in Brazil.Ultimately, we praise the INPI for putting the proposals to public consultation, but werecommend they be abandoned in their specific form. Instead, we suggest an alternativeapproach that the INPI might consider, one that can go some way toward achieving thePage 1 of 2Permalink: undefinedDate originally posted: undefinedDate PDF generated: 01/11/2023goal of reducing prosecution times, but in a way that is less vulnerable to the negativeeffects that our analysis warns about.* The article in Portuguese is free but registration is required.The views expressed in this post are those of the author and do not reflect thoseof the International Development LSE blog or the London School of Economicsand Political Science.Image credit: Patent Law, Nick Youngson via The Blue Diamond Gallery.Page 2 of 2Permalink: undefinedDate originally posted: undefinedDate PDF generated: 01/11/2023

Brazilian Patent Office and changes to patenting deadlines

http://eprints.lse.ac.uk/120610/1/internationaldevelopment_2023_10_20_brazilian_patent_office_and_changes_to_patenting_deadlines.pdf

Brazilian Patent Office and changes to patenting deadlines

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